11295903 (B.P.A.I. Jul. 30, 2012)

Ex Parte Bierman et al

Board of Patent Appeals and InterferencesJul 30, 2012

11295903 (B.P.A.I. Jul. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte STEVEN F. BIERMAN, RICHARD A. PLUTH, and WAYNE T. MITCHELL ____________________ Appeal 2010-007596 Application 11/295,903 Technology Center 3700 ____________________ Before: GAY ANN SPAHN, JAMES P. CALVE, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-3, 6-9, and 22-27. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-007596 Application 11/295,903 2 THE CLAIMED SUBJECT MATTER Appellants’ claims are directed generally to a method of “anchor[ing] a catheter or medical article in position upon a patient.” Spec. 1, para. [0002]. Claims 1, 6, 12, and 17 are independent and claim 1, reproduced below, with emphasis added, is illustrative of the claimed subject matter on appeal: 1. A method of anchoring a medical article onto a patient, which permits an axial position of the medical article to be repositioned relative to the patient, comprising: inserting a section of the medical article into a channel receptacle of a compressible member, the compressible member being supported by a base, the base comprising a first material and the compressible member comprising a second material, the second material being softer than the first material; producing a compressive stress within the compressible member so as to increase the normal force acting upon the inserted section of the medical article and thereby increase a frictional force between the inserted section of the medical article and the compressible member; applying a compression stress to the compressible member so as to produce said compressive stress acting upon the inserted section of the medical article, wherein the compression stress is applied by inserting a biasing member into an aperture of the compressible member in a manner creating interference between the biasing member and the compressible member which compresses the compressible member, the aperture not being part of the channel; and positioning a cover over at least a portion of the channel receptacle and securing the cover in a position overlying the portion of the channel receptacle. Appeal 2010-007596 Application 11/295,903 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Orr Russo Dalton Fleischer Landuyt US 5,382,239 US 5,484,420 US 5,499,976 US 6,273,873 B1 US 6,387,076 B1 Jan. 17, 1995 Jan. 16, 1996 Mar. 19, 1996 Aug. 14, 2001 May 14, 2002 REJECTIONS The Examiner made the following rejections: Claims 1-3, 6-9, 22-24 and 26 stand rejected under 35 U.S.C §103(a) as being unpatentable over Landuyt Dalton, and Orr. Ans. 3. Claims 12-21 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Landuyt and Dalton. Ans. 10. Claim 25 stands rejected under 35 U.S.C §103(a) as being unpatentable over Landuyt, Dalton, Orr, and Russo. Ans. 13. Claim 27 stands rejected under 35 U.S.C §103(a) as being unpatentable over Landuyt, Dalton, Orr, and Fleischer. Ans. 14. ANALYSIS Obviousness based on Landuyt, Dalton, and Orr Each of independent claims 1 and 6 requires “inserting a biasing member into an aperture of the compressible member.” App. Br., Clms. App’x. Regarding claim 1, Appellants assert that the Examiner has mischaracterized the scope and content of Landuyt. App. Br. 7. In order to meet the above-quoted limitation, the Examiner finds that Landuyt’s edge 33 is the biasing member and that it “is inserted in the aperture under tooth 24 Appeal 2010-007596 Application 11/295,903 4 between the face 10 and the catch 20 (Fig. 1, Col. 3 lines 23-24).” Ans. 5. The Examiner goes on to find that Landuyt’s “catch is effectively an extension of the compressible face and is also compressible as it compresses downward upon engagement with the biasing member 33.” Ans. 5-6 (emphasis added). Landuyt’s catch 20, effectively being an extension of the compressible face as suggested by the Examiner, however, does not make the catch 20 part of the claimed compressible member. Simply put, as stated by Appellants, Landuyt’s catch 20 is a separate “latching means” (i.e., not part of the compressible member of Landuyt as modified by Dalton) and “would not compress a compressible member or produce a compressive stress acting upon the inserted section of the medical article as asserted by the Examiner” in order to satisfy the last paragraph of claims 1 and 6. App. Br. 8-9. Moreover, we agree with Appellants that Landuyt’s catch 20 would not compress the claimed compressible member in the Examiner’s proposed combination. The claim language at issue requires that the biasing member be inserted into an aperture of the compressible member as described throughout the rest of the claim. The compressible member of claim 1 must also include, inter alia, a “channel receptacle,” it must be “supported by a base,” it must comprise a “second material” that is “softer than the first material,” and the claimed “compressive stress” must be “applied by inserting a biasing member into an aperture of the compressible member.” Further, all of these structural aspects must interact in the manner described in the claimed method. The Examiner has merely asserted that, after Landuyt is modified by the teachings of Dalton to include a compressible member, a different Appeal 2010-007596 Application 11/295,903 5 element, i.e., Landuyt’s latching means (comprising elements 20, 24, and 33), then creates a stress that somehow acts on the reconfigured device. We do not agree with the Examiner that Landuyt’s latching means can be considered the claimed compressible member or a part thereof. Further, the Examiner relied on Orr for teaching “a catheter fixation device which uses an inner compressible member which is made out of a soft moldable material because it provides friction to facilitate gripping the catheter.” Ans. 5. Orr does not cure the deficiencies noted supra with respect to Landuyt and Dalton. Accordingly, because the combination of the teachings of Landuyt, Dalton, and Orr does not actually result in the limitations of claims 1 and 6, the rejection is improper. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 6, and claims 2, 3, 7-9, 22-24, and 26 dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Landuyt, Dalton, and Orr. Obviousness based on Landuyt, Dalton, Orr, and Russo and Obviousness based on Landuyt, Dalton, Orr, and Fleischer Appellants contend that each of Russo and Fleischer fails to cure the deficiencies of the rejection of independent claim 1. App. Br. 16 and 17. We agree with Appellants. For the same reasons as discussed supra with respect to independent claims 1 and 6, respectively, we do not sustain either the Examiner’s rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable over Landuyt, Dalton, Orr, and Russo or the Examiner’s rejection of claim 27 under 35 U.S.C. § 103(a) as unpatentable over Landuyt, Dalton, Orr, and Fleischer. Appeal 2010-007596 Application 11/295,903 6 Obviousness based on Landuyt and Dalton Regarding claims 12 and 17, Appellants assert that the “Examiner erred by failing to identify a valid reason for combining Landuyt and Dalton in the manner claimed.” App. Br. 14. We understand Appellants to be arguing that the Examiner’s articulated reason lacks a rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). We agree. We are not persuaded the Examiner’s reasoning that “the flexible member would decrease the likelihood of the catheter becoming kinked” has a rational basis. Ans. 10. While it is true that Dalton discloses a flexible and/or elastic catheter retainer/pad (Col. 2, ll. 20-23. See also Figs. 1-4), the device of Dalton is a complete catheter retainer that holds a catheter in a manner rather differently than that of Landuyt, “which relies upon protruding teeth 35 that ‘bear against the upper surface of the catheter 4’ to slightly compress the wall of the catheter against the locating region 16.” App. Br. 15 (citing to Landuyt, col. 3, ll. 26-29). As noted by Appellants, Landuyt’s teeth 35 “are already designed to avoid kinking” (App. Br. 10 citing to Landuyt at col. 3, ll. 29-32), so it is unclear why it would have been obvious to one of ordinary skill in the art to modify Landuyt by the teachings of Dalton to accomplish the kinking avoidance already included in the device of Landuyt and upon which the Examiner at least partly justifies the combination. Appeal 2010-007596 Application 11/295,903 7 Further, Landuyt’s teeth 35 impinge upon the catheter 4 in an otherwise open channel 11 that allows free movement of the catheter 4, whereas if Dalton’s retainer were used in place of Landuyt’s channel, the teeth 35 would not impinge upon the catheter as taught, but would impinge upon the top of the retainer. This would create an interaction not contemplated by either of Dalton or Landuyt and the Examiner has not sufficiently explained why one of skill in the art would so completely change how the teeth of Landuyt interact with the catheter channel in the proposed combination. We are also not persuaded the Examiner’s articulated reason that making the channel be a flexible material to allow for placement of a larger diameter catheter into the channel has a rational basis. Neither Landuyt nor Dalton appears to contemplate the need to house a larger diameter catheter. In fact, both Landuyt and Dalton appear to be specifically designed to fit a particular size catheter. See Landuyt, Fig. 2 and Dalton, Fig. 4. Dalton, in particular, states that “[i]n the preferred embodiments, especially when the pad is not only flexible, but also elastic, at least part of the tunnel can be sized in cross section slightly smaller than the catheter to be retained,” and “[t]he cross section of the tunnel is one of the variable parameters which can be adjusted to retain the catheter to the desired degree.” Dalton, col. 3, ll. 19-24. Thus, it appears that the tunnel 40 of Dalton’s retainer is sized to fit a specific diameter catheter. Accordingly, we conclude that the Examiner has failed to articulate a reason having a “rational underpinning” to explain why one of skill in the art would look to include Dalton’s complete catheter retainer, or even properties thereof, into Landuyt’s complete device that operates in a different manner. Appeal 2010-007596 Application 11/295,903 8 As such, we do not sustain the Examiner’s rejection of independent claims 12 and 17, and dependent claims 13-16 and 18-21, under 35 U.S.C. § 103(a) as unpatentable over Landuyt and Dalton. DECISION We REVERSE the Examiner’s rejections of claims 1-3, 6-9, and 12- 27. REVERSED Klh